Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's Request for Continued Examination (RCE) filed June 10, 2026, with the submission filed on May 13, 2026, that includes a response to the Final Office Action mailed February 13, 2026, has been entered. Claims 20, 33, and 39 have been amended; and claims 1-19, 21-29, 38, and 42 have been canceled. Claims 36, 37, and 41 have been withdrawn. Claims 20, 30-35, 39, and 40 are under examination.
Claim Objections
Claim 20 is objected to because of the following:
1. In claim 20, there should be a semicolon rather than a comma between each wherein clause, e.g. between “the locus” and “wherein”, etc.; and there should be an “and” between “pendimethalin” and “wherein”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
I. Claims 20, 30-35, 39, and 40 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 20, as now amended, is directed to “a method of selectively controlling a weed at a locus”, and further stipulates that the “weed” is specifically “a monocotyledonous weed of Alopercurus myosuroides”, which comprises “applying napropamide as the sole active ingredient to the locus”. While the original specification provides adequate support for napropamide controlling at least certain types of monocotyledonous weeds at a locus, the original specification does not provide adequate support for napropamide “selectively controlling” only Alopercurus myosuroides at a locus, or even selectively controlling only monocotyledonous weeds at a locus. Indeed, napropamide is well known in the art to be very effective at controlling dicotyledonous weeds, and the present specification confirms this in paragraph [0008], with the disclosure that napropamide has been shown to have application in controlling dicotyledonous weeds. The original specification thus does not provide adequate support for a method of “selectively controlling” only Alopercurus myosuroides, or even selectively controlling any one monocotyledonous weed at a locus without controlling other monocotyledonous weeds or any dicotyledonous weeds.
This constitutes new matter.
Claims 30-35, 39, and 40 depend (ultimately) from claim 20.
II. Claims 20, 30-35, 39, and 40 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 20, as now amended, is directed to “a method of selectively controlling a weed at a locus”, and further stipulates that the “weed” is specifically “a monocotyledonous weed of Alopercurus myosuroides”, which comprises “applying napropamide as the sole active ingredient to the locus”. While the original specification provides examples in which napropamide can control a monocotyledonous weed at a locus, Applicant does not provide any example in which napropamide controls only Alopercurus myosuroides, or controls only monocotyledonous weeds, and not any dicotyledonous weeds, at the same locus. Moreover, napropamide is well known in the art to be very effective at controlling dicotyledonous weeds, and the present specification confirms this in paragraph [0008], with the disclosure that napropamide has been shown to have application in controlling dicotyledonous weeds, but is less effective at controlling monocotyledonous weeds. Therefore, “selectively controlling” only Alopercurus myosuroides, or even selectively controlling only one specific monocotyledonous weed, but not controlling other monocotyledonous weeds, and not controlling any dicotyledonous weeds, at a particular locus simply runs counter to the general knowledge and skill in the art, and was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 20, 30-35, 39, and 40 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 20 requires applying napropamide to a locus of a cereal crop, wherein the cereal crop is either already planted at the locus (but may not have yet emerged), or, alternatively, is not yet even planted at the locus. The claim states that the intended purpose of applying the napropamide is to “selectively control…a monocot weed of Alopecurus myosuroides”. One of ordinary skill in the art cannot definitively ascertain whether the referenced monocot weed of Alopecurus myosuroides is necessarily even physically present at the locus at all. In other words, does the claim encompass treating a monocot weed of Alopecurus myosuroides that is already physically present at the locus, or preventing a monocot weed of Alopecurus myosuroides from being physically present at the locus, or both. One of ordinary skill in the art thus cannot definitively ascertain the metes and bounds of the claimed subject matter.
***For examination at this time, the claim is being interpreted as the napropamide is being applied to a locus that either can contain Alopecurus myosuroides that is already physically present at the locus, or does not contain any Alopecurus myosuroides, or any other weed, physically present at the locus at all. In other words, no weed, including Alopecurus myosuroides, need be physically present at the locus at all.
Claim 20 stipulates in a wherein clause that “said napropamide is applied in an amount corresponding to 400 g/Ha to 700 g/Ha D-napropamide”. One of ordinary skill in the art cannot definitively ascertain whether the claim is limited to applying only D-napropamide or not, and for the latter case what amount of other forms of napropamide “correspond to” 400 g/Ha to 700 g/ha D-napropamide.
Claims 30-35, 39, and 40 are indefinite for depending from an indefinite claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 20, 30-35, 39, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Shroff et al. (U.S. Patent Application Pub. No. 2014/0274717), in view of Zhang (Chinese Patent Application Pub. No. CN 108990990 A) and Wiersma et al. (Minnesota Crop News [online]; 2018).
Applicant Claims
Applicant’s elected subject matter is directed to a method of controlling Alopecurus myosuroides at a locus comprising applying to a locus where a winter wheat crop has been planted but is not yet emerged a composition comprising D-napropamide and an exicipient to control a monocot weed of the genus Alopecurus that is resistant to ethofumesate; wherein the D-napropamide is applied in the amount of 450 m/Ha, or 400-700 g/Ha, and wherein the winter wheat crop is planted at a depth of at least 2 cm.
***For examination at this time, controlling Alopecurus myosuroides at a locus is being interpreted as encompassing within its scope preventing Alopecurus myosuroides from being present at the locus. In other words, Alopecurus myosuroides need not be present at the locus at the time of napropamide application, or at any time prior to or after napropamide application.
Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Shroff et al. disclose a method of controlling a weed at a locus where a crop has been planted but has not yet emerged (i.e. pre-emergence) comprising applying to the locus a composition comprising napropamide and an exicipient; wherein the composition can comprise one or more additional herbicides, the weed being controlled is e.g. ALOMY (i.e. Alopecurus myosuroides), and the napropamide is D-napropamide and can be applied e.g. in the amount of 450-600 g/Ha (abstract; paragraphs 0006, 0015, 0017, 0018, 0020, 0022-0024, 0030, 0034-0038, 0041, 00430056, 0058, 0062, 0069; Examples 4 and 5).
Zhang discloses that an herbicide composition comprising napropamide and an excipient can be applied to a winter wheat crop for high weeding activity and a wide weed control spectrum, and ensures winter wheat seedling quality and late period winter wheat production (see e.g. Derwent abstract).
Wiersma discloses that planting winter wheat seeds at a depth of 1-1.5 inches (i.e. 2.54-3.81 cm; i.e. “at least 2 cm”) in the fall is recommended to allow for adequate moisture from rain, and to allow for faster emergence when temperatures are rapidly declining, whereby the winter wheat crop has the best chance to survive, overwinter, and become productive.
Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Shroff et al. do not explicitly disclose that the crop planted at the locus is winter wheat at a depth of at least 2 cm. These deficiencies are cured by the teachings of Zhang and Wiersma.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Conclusion
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to combine the respective teachings of Shroff et al., Zhang, and Wiersma, outlined supra, to devise Applicant’s claimed method.
Shroff et al. disclose a method of controlling a weed at a locus where a crop has been planted but has not yet emerged (i.e. pre-emergence) comprising applying to the locus a composition comprising napropamide and an exicipient; wherein the composition can comprise one or more additional herbicides, the weed being controlled is e.g. of the genus Alopecurus, and the napropamide is D-napropamide and can be applied e.g. in the amount of 450-600 g/Ha. Since Zhang discloses that an herbicide composition comprising napropamide and an excipient can be applied to a winter wheat crop for high weeding activity and a wide weed control spectrum, and ensures winter wheat seedling quality and late period winter wheat production; and since Wiersma discloses that planting winter wheat seeds at a depth of 1-1.5 inches (i.e. 2.54-3.81 cm; i.e. “at least 2 cm”) in the fall is recommended to allow for adequate moisture from rain, and to allow for faster emergence when temperatures are rapidly declining, whereby the winter wheat crop has the best chance to survive, overwinter, and become productive; one of ordinary skill in the art would thus be motivated to apply a composition comprising napropamide and an excipient to a locus where a winter wheat crop has been planted at a depth of 2.54-3.81 cm, but not yet emerged (pre-emergence), with the reasonable expectation that the method will successfully control a wide spectrum of weeds, including weeds of the genus Alopecurus, at the locus, and ensure winter wheat seedling quality and late period winter wheat production.
Further, it is a common phenomenon well known in the art that weeds, for whatever reason, can become resistant to certain herbicides. Ethofumesate is a well-known herbicide employed to control weeds such as blackgrass (i.e. Alopecurus myosuroides Huds) in a locus of a winter wheat crop (see e.g. Lockett et al., WIPO International Patent Application Pub. No. WO 2008/075065). Hence, one of ordinary skill in the art would thus be even further motivated to apply a composition comprising napropamide and an excipient to a locus where a winter wheat crop has been planted but not yet emerged (pre-emergence), with the reasonable expectation that the method will successfully control a wide spectrum of weeds, including weeds of the genus Alopecurus that have become resistant to ethofumesate, at the locus, and ensure winter wheat seedling quality and late period winter wheat production.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed May 13, 2026 have been fully considered but they are not persuasive.
i) Applicant contends that “Shroff is directed to the use of Napropamide-M for selective control of dicotyledonous weeds” and “states that D-napropamide provides selectively enhanced control of dicotyledonous weeds vis-à-vis control of monocotyledonous weeds” and “that D-napropamide showed only moderate selectivity toward monocot weeds”; that “Shroff…describes combining Napropamide-M with a second herbicide that is active against monocotyledonous weeds”; that “Shroff’s pre-emergence D-napropamide application at overlapping rates…do not establish that Shroff necessarily and inevitably controls resistant Alopercurus myosuroides…and does not disclose napropamide alone control of such a weed”.
The Examiner, however, would like to point out the following:
1. Applicant has been presenting essentially the same arguments for a couple of years at this point. Let’s go through this again. The required active step is applying napropamide to a locus. That’s really it. The claim explicitly provides that no cereal crop need be present or planted at the locus at the time the napropamide is applied. Even more to the point, no Alopercurus myosuroides, and indeed no weed at all, needs to be present at the locus at the time of napropamide application, or any time before or after. In effect, Applicant is attempting to get a U.S. Patent for applying napropamide to a locus, e.g. applying napropamide to an empty plot of dirt. Applicant is not going to be granted a U.S. Patent for applying napropamide to an empty dirt plot since this is not a patentable advance, no matter what weed Applicant claims such a step can in theory prevent, and no matter how resistant that weed may be to other herbicides. If Applicant does not narrow the scope of the claim, the same arguments will be met with the same response. The claim does not require that napropamide is applied to Alopercurus myosuroides plants. The claim does not require that Alopercurus myosuroides plants are actively growing at the locus. The claim does not require that Alopercurus myosuroides, or any other weed, is necessarily present at the locus at all. Applicant talks about “possibility or probability”, but any actual physical involvement of Alopercurus myosuroides in this method is merely a “possibility or probability”.
2. Regardles whether Alopercurus myosuroides plants are present at the locus or not, Applicant is not “selectively controlling Alopercurus myosuroides” or “selectively controlling any Alopercurus monocot weed” with napropamide. This point has already been addressed in prior Office Actions, e.g. see the Office Actions mailed 2/24/25 and 7/7/25. As Shroff discloses, and as one of ordinary skill in the art would know, napropamide is effective at controlling ALOMY (i.e. Alopercurus myosuroides) as well as other monocot weeds and is even more effective at controlling dicot weeds. Also, Applicant is not selectively controlling only monocot weeds while Shroff is selectively controlling only dicot weeds. It’s the very same napropamide compound with the very same effect. Whatever napropamide does for Shroff it will do for Applicant too, and whatever napropamide does for Applicant it is doing for Shroff, even if Shroff does not disclose it or even knew about it. Napropamide is simply not going to know that it supposed to exclusively control Alopercurus myosuroides if Applicant applies it to a locus, but to exclusively control dicot weeds if Shroff applies it to a locus. When Shroff applied napropamide to the locus, the napropamide was controlling Alopercurus myosuroides just the same.
3. Applicant, just like Schroff, is applying napropamide to a locus. Applicant is applying D-napropamide to the locus in the amount of 400-700 g/Ha; Schroff is applying e.g. D-napropamide to the locus in the amount of 450-600 g/Ha, which is not patentably distinct at all. In Applicant’s method, no monocot weed of the genus Alopecurus that is resistant to ethofumesate need be present anywhere at all in the locus at any time. In Applicant’s method, no monocot weed need be present anywhere at all in the locus at any time. Therefore, Applicant’s method is simply not novel in view of the cited prior art. The actual concrete active step performed by the hand of man required by Applicant’s method is applying D-napropamide to a locus, in the amount of 400-700 g/Ha, which locus need not necessarily contain any weed of any kind whatsoever. The napropamide is thus applied to the ground, i.e. a plot of soil or dirt. Schroff discloses effectively the same step, i.e. applying D-napropamide to a locus, in the amount of 450-600 g/Ha, which locus need not contain any weed of any kind whatsoever.
4. Zhang discloses that napropamide can be applied to a winter wheat crop (i.e. a monocotyledonous crop plant) for high weeding activity and a wide weed control spectrum, and ensures winter wheat seedling quality and late period winter wheat production. Clearly, then, one of ordinary skill in the art would understand that napropamide can be applied to a locus where a monocotyledonous crop plant, i.e. a winter wheat crop, has been planted but has not yet emerged (pre-emergent), and the napropamide will be expected to successfully control weeds at the locus without adversely affecting the monocotyledonous crop, such as the winter wheat crop. Indeed, if anything, this action will be expected to promote the desired monocotyledonous crop by ensuring winter wheat seedling quality and late period winter wheat production.
5. One of ordinary skill in the art would not interpret Shroff as teaching that napropamide must necessarily be applied with a second herbicide to control monocot weeds, even if Shroff may exemplify or even prefer this. Even assuming, arguendo, however, that Shroff does require e.g. clomazone, the present claims do not exclude clomazone. Indeed, the present claims require “applying napropamide as the sole active ingredient”. In the context of the claim, an “active ingredient” is necessarily a compound that “selectively controls Alopercurus myosuroides”. Clomazone does not selectively control Alopercurus myosuroides. Indeed, clomazone provides broad spectrum control of monocot weeds and dicot weeds.
For the foregoing reasons, the 35 USC 103 rejections are hereby maintained.
Conclusion
No claims are allowed.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID BROWE whose telephone number is (571)270-1320. The examiner can normally be reached Monday - Friday, 9:30 AM to 6 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID BROWE/Primary Examiner, Art Unit 1617
Prosecution Insights